Filewrapper®

Federal Circuit grants rehearing en banc in design patent case

November 26, 2007

Post by Blog Staff

The Federal Circuit today granted a petition for rehearing en banc in a design patent case, Egyptian Goddess, Inc. v. Swisa, Inc.In that case, the court held that when a design patent's "point of novelty" is a combination of existing design elements, the point of novelty must be a "non-trivial" advance over the prior art. This essentially incorporated an obviousness-type inquiry into the infringement analysis, as in order to infringe a design patent, the allegedly infringing article must incorporate a point of novelty of the patented design.

Judge Dyk dissented, arguing that the new test conflated the tests for design patent validity and infringement.

Update (11/27): A copy of the order granting rehearing en banc is availble here. According to the order, there are three issues to be considered:

Should "point of novelty" be a test for infringement of design patent?

If so, (a) should the court adopt the non-trivial advance test adopted by the panel majority in this case; (b) should the point of novelty test be part of the patentee's burden on infringement or should it be an available defense; (c) should a design patentee, in defining a point of novelty, be permitted to divide closely related or, ornamentally integrated features of the patented design to match features contained in an accused design; (d) should it be permissible to find more than one "point of novelty" in a patented design; and (e) should the overall appearance of a design be permitted to be a point of novelty? See Lawman Armor Corp. v. Winner Int'l, LLC, 449 F.3d 1190 (Fed. Cir. 2006).

Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis? See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995).

It is interesting that the court is considering completely scrapping both the point of novelty test and the concept of claim construction in the context of design patents. In any event, it is good that the court is reconsidering its holding in Lawman Armor, as that case has caused considerable controversy (see here and here for examples), and resulted in the court issuing a supplemental opinion to clairfy its original ruling.

Latest Posts

June 01, 2020

May 25, 2020

May 19, 2020

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.